Excerpt: trade and merchandise act (1958) - section 9--registration of trade marks--duty of the registrar pointed out.; that no person is entitled to claim registration of his trade mark as a matter of right and where it is obvious that the purpose behind the use of such trade mark is dishonest, it would be quite proper for the registrar to use his discretions under section 18(4) of the act, even if the proposed trade mark is eligible for registration under section 9 of the act and does not come strictly within the mischief of section 11 or 12 of the act. the registration of trade marks is intended not only for the protection and benefit of the proprietor of the trade mark who has built up a reputation for his goods in association with his trade mark but also for the benefit of the public who..........the said act for the rectification of the trade marks register by the cancellation of the trade mark registered in the name of the respondent and for removal of the said trade mark from the register of trade marks. the cancellation of the respondents trade mark was sought on the ground that it was deceptively similar to the trade mark of the appellant and was likely to cause confusion in the minds of the people who purchased the chaff cutters and also on the ground that the use of the said trade mark by the respondent was dishonest. notice to this application was issued to the respondent and the latter fiied a counter-statement denying the allegations made by the appellant it was stated that the respondent's trade mark was distinctive and was not an immitation of the trade mark.....

Judgment:

M.R.A. Ansari, J.

(1) The appellant M/s W.A. Tyzack & Co. Limited is the owner of a registered trade mark consisting of a device of a man riding a horse and the word 'horseman' in English written underneath the device. This trade mark is in respect of chaff cutters which are agricultural implements used for the cutting of the chaff. The respondent is the owner of another registered trade mark consisting of the device of a horse with a human head and the words 'Jal Darai' in Devanagri script underneath the device. This trade mark is also in respect of chaff cutters and the trade mark was registered on 29.3.6L The trade mark of the appellant was registered in the year 1943, although according to the appellant the chaff cutters with the said trade mark have been used in India continuously since 1906. The appellant tiled an application before the Registrar of Trade Marks under sections 46, 47(4) and 56 of the Trade & Merchandise Marks Act, 1958 (hereinafter referred to as the Act) and under rule 94 of the rules framed under the said Act for the rectification of the trade marks register by the cancellation of the trade mark registered in the name of the respondent and for removal of the said trade mark from the register of trade marks. The cancellation of the respondents trade mark was sought on the ground that it was deceptively similar to the trade mark of the appellant and was likely to cause confusion in the minds of the people who purchased the chaff cutters and also on the ground that the use of the said trade mark by the respondent was dishonest. Notice to this application was issued to the respondent and the latter fiied a counter-statement denying the allegations made by the appellant It was stated that the respondent's trade mark was distinctive and was not an immitation of the trade mark similar to the appellant's trade mark. The appellant filed a number of affidavits in support of its application. The respondent did not file any affidavits but relied upon the tacts stated in its counter-statement as well as its trade mark On a comparison of the trade marks of the appellant and the respondent and on a consideration of the evidence, the learned Assistant Registrar, Trade Marks, held that the respondent's trade mark was not deceptively similar to that of the appellant's trade mark and was not likely to cause confusion and that, thereforee, there was not sufficient cause removing the respondent's trade mark from the register He, thereforee, dismissed the application filed by the appellant The appellant has hied the present appeal against the said order of the learned Asstt. Registrar.

(2) Section 56(1) of the Act under which the appellant filed the application for rectification is in the following terms :-

'ONapplication made in the prescribed manner to a High Court or to the Registrar by any person aggrieved, the tribunal may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation there to.'

(3) This section would enable a person to move the Registrar for the cancellation of a trade mark which has already been registered on the ground that the registration itself was in contravention of the conditions which were necessary for a trade mark to be registered. Under section 11 of the Act, a trade mark-

(A)the use of which would be likely to deceive or cause confusion shall not be registered as a trade mark and under section 12(1) of the Act, no trade mark shall he registered in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of a different proprietor in respect of the same goods or description of goods If the respondent's trade mark comes within the mischief of section 11 or section 12 of the Act, it would be open to the appellant to move the Asstt. Registrar for cancellation of the respondent's trade mark. The question, thereforee, for consideration is whether the respondent's trade mark was deceptively similar to the appellant's trade mark or whether the use of the respondent's trade mark was likely to deceive or cause confusion.

(4) Before answering this question, it is desirable to keep in mind the principles which govern such cases. These principles are enunciated by Chagia C.J. in James Chadwich & Bros. Ltd. v. The National Sewing Thread Co.. Ltd. : AIR1951Bom147 and by Lord Johnston in Price's Patent Candle Company Ltd. v. Ogsion and Tennant Ltd. (26 R P Dk Cases 797 Chagia C.J. speaking for the court, had explained these tests in the following words :-

'LOOKINGat the scheme of these two sections, it seems to be clear that section 10 has undoubtedly a restricted operation. It deals with a case where the trade mark sought to be registered is identical with the trade mark of another proprietor or where there is a close resemblance between those two trade marks. So that under S. 10 what the Registrar has got to do is to compare the trade mark of the person applying for registration with the trade mark already registered by him, and if he finds that there is an identity between the two or there is a close resemblance such as to be likely to deceive or cause confusion, then he must refuse registration. When we turn to S. 8, it is wider in its operation. In the first place, if there is a trade mark which is likely to deceive or cause confusion, it must be refused notwithstanding the fact that there is identity with another trade mark nor is there any close resemblance with another trade mark. The Registrar has to come to a conclusion independently of any comparison with any registered trade mark. Further, whereas S. 10 contemplates an opposition by a proprietor of a registered trade mark, opposition under S. 8 may come even from a person who is selling goods under a trade mark which is not registered. What the Registrar has to decide is merely whether looking to all the circumstances of the case, a particular trade mark is likely to deceive or to cause confusion. In this particular case the Registrar has come to the conclusion that the trade mark in question falls both under Ss. 8 and 10. According to him there is a close resemblance between the trade mark of the appellants & the trade mark of the respondents such as likely to deceive or cause confusion, & also it is his opinion that apart from any resemblance in itself the trade mark sought to be registered is one which is likely to deceive or cause confusion. The principles of law applicable to the facts of this case are well settled. The burden of proving that the trade mark which a person seeks to register is not likely to deceive or cause confusion is upon the applicant. It is for him to satisfy the Registrar that his trade mark does not fall within the prohibition of S. 8 and 10 and thereforee it should be registered. The Registrar, in coming to the conclusion whether a trade mark should or should not be registered, exercises the discretion vested in him by statute & the Court in appeal should always be extremely loath to interfere with that discretion. The authorities clearly lay down that discretion should not be interfered with unless the Court comes to the conclusion that the Registrar in coming to the conclusion that he did was clearly wrong or patently in error. Now in deciding whether a particular trade mark is likely to deceive or cause confusion, it is not sufficient merely to compare it with the trade mark which is already registered & whose proprietor is offering opposition to the registration of the former trade mark. What is important is to find out what is the distinguishing or essential feature of the trade mark already registered & what is the main feature or the main idea underlying that trade mark, & if it is found that the trade mark whose registration is sought contains the same distinguishing or essential feature or conveys the same idea, then ordinarily the Registrar would be right if he came to the conclusion that the trade mark should not be registered. The real question is as to how a purchaser, who must be looked upon as an average man of ordinary intelligence, would re-act to a particular trade mark, what association he would form by looking at the trade mark, & in what respect he would connect the trade mark with the goods which he would be purchasing. It is impossible to accept that a man looking at a trade mark would take in every single feature of the trade mark. The question would be, what would he normally retain in his mind after looking at the trade mark? What would be the salient feature of the trade mark which in future would lead him to associate the particular goods with that trade mark?)'

This is what Lord Johnston observed :-

'IThas been repeatedly pointed out by Judges of eminence in England that infringement of Trade Mark is to be judged of not by careful comparison of the two marks in question, but by regarding the alleged infringement by itself, and considering whether, when casually presented to a person accustomed to the other, it is calculated to deceive. I think also that the class of customer is recognised as a legitimate element in the consideration. If the Defenders' label is looked at, what attracts attention is the panorma, and specially its central feature. Of course a detailed examination, when attention is drawn to the similarity and difference of the two labels, will easily show the distinction. But I am called to judge, not on the careful and detailed examination of the man whose attention has been specially drawn to the subject of the two labels, but on the casual view of the man who is not asked to compare the two labels, but who, being accustomed to the one, has the other handed to him across the counter in course of his marketting. In the case of such I think that the Defenders' label is calculated to deceive and that deception is extremely probable.'

(5) Their respective trade marks of the appellant and respondent may be described in the words of the learned Assistant Registrar himself as under :-

'IN my view the Applicant's mark at the first sight is likely to generate the idea of a horse rider in the mind of average customers. As a man riding a horse is.a common spectable observed even by villagers and peasants from childhood there will be no difficulty in absorbing this idea in the mind as soon as one sees the mark. To a few who are not good observers and who have a very imperfect memory the idea of a horse alone might remain in the mind. As the average customer of the goods may be assumed to be not able to read or remember English words perhaps very few will remember or identify the mark by the word 'HORSEMAN', except of course the educated buyers.'

(6) The respondent's trade mark has been described as follows :-

'NOW,turning to the impugned registered trade mark a casual glance at it will show that there is something unusual, fantastic or grotesque about it. For , thing the device is not the representation of any known living creature. It is obviously a produet of the imagination, perhaps suggested from some mythological stories. The idea of a winged creature with a human head and animal body is something which will attract the attention of any customer, even of one with below the average ability as something strange. In Hindu Mythology there is the sacred animal Kamadhanu with a human head and a cow's body. This is familiar to most Hindus particularly the villagers. Similarly it appears, as admitted by the learned counsel for the registered proprietor, at the hearing that there is the Mohammed's horse called Burak which has a human head and a horse's body. The device constituting the registered trade mark is certainly a novel one and quite out of the ordinary which is likely to attract the attention of any customer and a general idea of it is very likely to remain in his mind'.

(7) At my direction, the appellant and the respondent produced the chaff cutters containing their respective trade marks. The chaff cutters produced were quite new and wholly unused. Even so, the trade marks on these chaff cutters were not as clear and distinct as paper and the trade marks were much smaller in size than those appearing in the trade mark register. This circumstance also has to be taken into consideration in determining whether the respondent's trade mark is deceptively similar to that of the appellant and whether it is likely to cause confusion in the minds of the buyers, who as staled by the learned Assistant Registrar, are mostly illiterate agriculturists. To my mind, the respondent's trade mark is deceptively similar to that of the appellant and is certainly likely to cause confusion in the minds of the buyers. Whereas on the one hand these buyers would be familiar with the device on the trade marks of the appellant, namely, a man riding a horse, they will be wholly unfamiliar with the device on the respondent's trade mark. Even the learned Assistant Registrar is not quite sure whether the respondent's device represents a horse or a cow but at one stage he has stated that the device is like that of the Burak which is generally understood to be a horse with a human head. Again he has stated that the device of the respondent's trade mark is tike that of a Kamadhenu, which is a cow with a human head. The general impression created by the respondent's device would be that of a horse. The legs of the animal may be those either of a cow or of a horse but the tail is clearly that of a horse. The villagers who are quite familiar with these animals, namely, a cow or a horse; will not recognize the respondent's device as a cow but will recognize it only as a horse. The human head is likely to be mistaken for a rider. if a villager asks for a chaff cutter containing the device of a horse and rider and if the chaff cutters of the respondent's are shown to him, he is.certainly likely to be deceived into believing that he is purchasing the chaff cutters of the appellant. The Burak or a Kamadhenu is not :a figure which is initially recognizable by a villager. A Moulvi may recognize the respondents' trade mark as the Burak but lie will be puzzled with the Tilak on the human head of the Burak. On the other hand, a Pandit may recognize the respondent's trade mark as The Kamadheml but will be equally puzzled with the tail of this animal. It is inconceivable why the respondent should have used the device of a Burak on a chaff cutter but taking care to put a Tilak on the human head. It is equally inconceivable why the respondent should have used the device of a Kamadhenu but attaching a horse's tail to the cow. The purpose for which the respondent had used this particular device is quite obvious, namely, to make the device resemble to that of the appellant's trade mark but at the same time to introduce certain minor distinguishing marks on the basis of which he could say that his device is not the same or similar to that of the appellant. The use of this trade mark clearly amounts to a dishonest trade practise. No person is entitled to claim registration of his trade mark as a matter of right and where it is obvious that the purpose behind the use of such trade mark is dishonest, it would be quite proper for the Registrar to use his discretions under section 18(4) of the Act even if the proposed trade mark is eligible for registiation under section 9 of the Act and does not come strictly within the mischief of section 11 or 12 of the Act. The registration of trade marks is intended not only for the protection and benefit of the preprietor of the trade mark who has built up a reputation for his goods in association with his trade mark bill also for the benefit of the public who would like to purchase the goods which have acquired such a reputation and who would not like to purchase immitation of such goods. thereforee,. the motive underlying the proposed trade mark is a very impottant factor to be taken into consideration by the Registar in exercise of his discretion. By the proper exercise of his discretion. he cught to discourage persons from resorting to dishonest trade practice. Not only should the Registrar before granting registration of a trade mark consider whether the proposed trade mark satisfies the condition laid down under section 9 of the Act or that the proposed trade mark does not come within the mischief of section 11 or 12 of the Act but he should also consider why a person should adopt a trade mark which is similar to another trade mark in respect of the same class of gccds which has already been registered and which has acquired certain amount of reputation in the market,

(8) The learned counsel for the appellant has also contended that the respondent's trade mark comes within the mischief of section 11(d) of the Act inasmuch as the device in the trade mark is that of the Berak which is held sacred by the Muslims. This contention bed rot ben sepecifically raised by the appellant in his application under section 56 of the Act but it would appear from the order of the learned Assistant Registrar that this contention was raised by the learned counsel before him at the time of the hearing of the case. This contention has been specifically raised by the appellant in the grounds of appeal in this Court. But no evidence was led in by the appellant in support of this contention. This is not the matter of which the court can take judicial notice or to which I could indent upon my own knowledge of Muslim Theology. In the absence of any evidence, it is not possible for me to hold that the respondent's trade mark is likely to hurt the religious susceptibilities of any class or section of the citizens of India.

(9) In the present case I am not only of the view that the trade mark of the respondent is deceptively similar to that of the appellant and is likely to cause confusion in the minds of the buyers but also that the respondent is guilty of dishonest trade practice. The trade mark of the respondent is, thereforee, cancelled and it shall be removed from the register of trade marks. It would of course be open to the respondent to ask for registration of his trade mark which is suitably modified so as to be unobjectionable.

(10) In the result the appeal is allowed but there shall be no orders as to costs.